By: Peter L. Holmes, Esq.
This Final Rule [scheduled to be published in the Federal Register on December 9, 2020 and available online at federalregister.gov/d/2020-27048, and on govinfo.gov] relates to America Invents Act (AIA) trial proceedings for challenging claims in U.S. patents on asserted grounds of unpatentability and applies to Inter Partes Review (IPR) and Post-Grant Review (PGR) petitions filed on or after January 8, 2021.
In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), it was held that a decision to institute an IPR trial under 35 U.S.C. 314 may not institute review on fewer than all claims challenged in a petition and that the U.S. Patent and Trademark Office (USPTO or Office) has the discretion to institute trial on either all of the claims challenged in the petition or to deny the petition. The U.S. Supreme Court noted that section 314 “indicates a binary choice—either institute review or don’t,” SAS, 138 S. Ct. at 1355, adding that “Congress didn’t choose to pursue” a statute that “allows the Director to institute proceedings on a claim-by-claim and ground-by-ground basis” as in ex parte reexamination, id. at 1356). The Federal Circuit has also held that “if the Board institutes an IPR, it must similarly address all grounds of unpatentability raised by the petitioner.” AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1364 (Fed. Cir. 2019). See unpublished Final Rule, p. 6.
Prior to the U.S. Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) and guidance thereafter provided by the USPTO, the Patent Trial and Appeal Board (PTAB or Board) exercised discretion to institute an IPR or PGR on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted in a petition. To implement Office changes in practice in the regulation, this Final Rule revises the rules of practice for instituting a proceeding to require institution on either all challenged claims (and all of the grounds) presented in a petition or none. Therefore, in all proceedings subject to the amended rule, the Board will either institute review on all of the challenged claims and grounds of unpatentability presented in the petition or deny the petition.
For purposes of deciding whether to institute an IPR or PGR proceeding, previous Office rules provided a presumption in favor of the petitioner in relation to a genuine issue of material fact created by testimonial evidence submitted with a patent owner’s preliminary response (to the petition). This Final Rule also amends the rules to eliminate the aforementioned presumption that a genuine issue of material fact created by the patent owner’s testimonial evidence filed with a preliminary response will be viewed in the light most favorable to the petitioner for purposes of deciding whether to institute an IPR or PGR. “Thus, consistent with the statutory framework, any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence. Doing so will remove a disincentive to patent owners submitting pre-institution testimony, eliminate a source of confusion, and align the Board’s practice with its treatment of other evidence at the time of institution, without adversely impacting petitioners’ ability to ensure that otherwise meritorious petitions proceed to trial.” Unpublished Final Rule, p. 9.
If you have questions about this USPTO Final Rule, or about patent, trademark or other intellectual property-related matters, please contact Peter L. Holmes. Peter is Counsel at Leech Tishman and a member of the Intellectual Property Practice Group and LaunchPad Start-Up Services group.
Peter is based in Leech Tishman’s LAX office and can be reached at 424.502.5100 or via email at firstname.lastname@example.org.